---------------------------------------- FROM RESPONDENT 010: NAME: Scott Weide COMPANY: QUIRK & TRATOS ADDR-1: 550 E. CHARLESTON BLVD. . SUITE D CITY, STATE ZIP: LAS VEGAS NEVADA 89104 TELEPHONE: (702) 386-1778 FAX: REPRESENT: firm ---------------------------------------- QUESTION 01: Should the PTO require that all Official application related materials be delivered to a central location? Specifically, what problems would a requirement that all official application-related materials be delivered to a central location cause? ---------------------------------------- COMMENT ON QUESTION 01: ------- 010-Q01.TXT All materials should be sent to a central location for identification and entry by the Patent Office. The only problem witS such an arrangement surrounds transferring the application related material, and any corresponding PTO file, to and from the central location and the Examiner or other location. Consideration of the time involved in this process must be evaluated against the cost of havinq an information entry area at each PTO location and the risk that some material would not ever be entered if not attributed to a particular location ---------------------------------------- QUESTION 02: Should the PTO adopt a standard application format? If so, what portions of the application papers should the PTO require be submitted in a standard size and/or format, and what sanction (e.g., surcharge) should be established for the failure to comply with these requirements? ---------------------------------------- COMMENT ON QUESTION 02: ------- 010-Q02.TXT The PTO should adopt a standard application format. The Office should require that the application be submitted on a disc in computer readable form (just as with the present comment) OR that the application be submitted on paper in a particular form which allows for scanning by the Patent Office. If the application is not submitted in this form, the applicant should be given the option of sending in a fee or correcting the format deficiency in one month or have the application deemed abandoned. ---------------------------------------- QUESTION 03: If the entire application is not published, what information concerning the application should be published in the Gazette of Patent Application Notices? ---------------------------------------- COMMENT ON QUESTION 03: ------- 010-Q03.TXT The application should be printed in a form similar to what the Gazette provides for: an amount of information which allows a reader to identify which applications he or she may wish to further investigate. We suggest that an abstract and possibly one representative claim be published, with the remainder of the application available for inspection. ---------------------------------------- QUESTION 04: Should the patent applicant receive a copy of the published application -- either published notice and/or application content at time of publication? ---------------------------------------- COMMENT ON QUESTION 04: ------- 010-Q04.TXT No, unless the Patent Office is willing to send a notice of what is intended to be printed well in advance of the printing date so that the applicant can review it to ensure that it does not rantA i n errorR ---------------------------------------- QUESTION 05: Should the PTO permit an accelerated examination? If so, under what conditions? ---------------------------------------- COMMENT ON QUESTION 05: ------- 010-Q05.TXT Yes, the PTO should permit accelerated examination on the following basis: 1) upon a showing of the conditions which currently allow for accelerated examination and payment of a small fee, or 2) upon payment of a much larger fee for requests which do not have any specific reason other than the applicant's desire to accelerate examination. ---------------------------------------- QUESTION 06: Since the cost for publishing applications must be recovered from fees, how should the cost of publication be allocated among the various fees, including the possibility of charging a separate publication fee? ---------------------------------------- COMMENT ON QUESTION 06: ------- 010-Q06.TXT No separate fee should be charged. It is often very difficult to obtain timely payment for issue fees, maintenance fees and the like from sole inventors and small companies who are often cash poor. This leaves the patent agent or law firm with the choice of paying the fee for them and trying to later collect it from them, or allowing the application to go abandoned and trying to avoid a claim by the applicant that the firm is overcharging them or neglecting their work. It would be best if the filing fee covered the cost of publication. If the entire application is published, the fee (even as included in the filing fee) may need to include a surcharge for very long applications, while if only an abstract is published, a flat amount built into the filing fee is appropriate. Of course, including the publication fee with the filing fee means that some applicants who abandon their applications before publication pay for a cost which is not incurred, but this is true of present practice as to those applicants who pay the filing fee but abandon their applications before examination is completed. ---------------------------------------- QUESTION 07: Should the PTO require an affirmative communication from a patent applicant indicating that the applicant does not wish the application to be published, or should failure to timely submit a publication fee be taken as instruction not to publish the application? That is, should an application be published unless the applicant affirmatively indicates that the application is not to be published, regardless of whether a publication fee has been submitted? What latitude should the PTO permit for late submission of a publication fee? ---------------------------------------- COMMENT ON QUESTION 07: ------- 010-Q07.TXT NWith the publication fee built into the filing fee, no separate publication fee is necessary. The PTO would not then need to address the issue of whether an application should be published. If the application has not been expressly abandoned, it should be published. There is then no need for latitude in submitting late publication fees. Allowing late payment of the publication fee is undesirable because it would provide an incentive to file multiple applications and would provide an undue advantage to foreign applicants. ---------------------------------------- QUESTION 08: The delayed filing of either a claim for priority under 35 U.S.C. 119 or 120 may result in the delayed publication of the application. Should priority or benefit be lost if not made within a reasonable time after filing? What latitude should the PTO permit for later claiming of priority or benefit? ---------------------------------------- COMMENT ON QUESTION 08: ------- 010-Q08.TXT Priority should be lost if a claim for priority is not made within a reasonable specified time after filing. No latitude should be given to claim priority. Such a rule allows big business the unfair advantage of delaying publication of their applications by paying a late fee and claiming priority after the 18 month date. ---------------------------------------- QUESTION 09: Once the patent has issued, should the paper document containing information similar to that published in the Gazette of Patent Application Notice, i.e., the Patent Application Notice, be removed from the search files, and should publication information be included on the issued patent? ---------------------------------------- COMMENT ON QUESTION 09: ------- 010-Q09.TXT There appears to be no substantial reason for leaving such information in the file or including it on the issued patent. ---------------------------------------- QUESTION 10: After publication, should access to the content of the application file be limited to the originally filed application papers? If not, what degree of access should be permilted? Should access be limited to the content before publication, or should it extend to materials added after publication? ---------------------------------------- COMMENT ON QUESTION 10: ------- 010-Q10.TXT Access should be limited to the application as filed. It is much too complicated and expensive for the PTO to do otherwise. Of course, after an application has issued, whether before the publication date or after, the entire file history of the application should be accessible. ---------------------------------------- QUESTION 11: 11. After publication, should assignment records of a published application also be made accessible to the public? ---------------------------------------- COMMENT ON QUESTION 11: ------- 010-Q11.TXT Yes. There is no reason to keep these documents secret. ---------------------------------------- QUESTION 12: After publication, should access include the deposit of biological materials as set forth in 37 CFR 1.802 et seq.? ---------------------------------------- COMMENT ON QUESTION 12: ------- 010-Q12.TXT No. Such would be overly burdensome of the Patent Office and perhaps, the applicant. ---------------------------------------- QUESTION 13: What types of problems will be encountered if all amendments must be made by (a) substitute paragraphs and claims, (b) substitute pages, or (c) replacement of the entire application? ---------------------------------------- COMMENT ON QUESTION 13: ------- 010-Q13.TXT As to all options, replacement of the pages will not allow the PTO to quickly determine the material added to, or removed from, the application. Specifically, as to option a), it is too difficult to replace individual paragraphs and claims, since it would be very difficult to identify that paragraph in the application which is being substituted. Option b), which is the same as current PCT practice, is the most economical and easy to accomplish method of amending applications. In this manner, only those pages affected by amendment are submitted. Option c) is cumbersome and environmentally unsound, as it may require an applicant to submit a new copy of a 50 page application in order to change a single word in a single claim. ---------------------------------------- QUESTION 14: Should protest procedures be modified to permit the third party submission of prior art only prior to a specific period after publication of the application? What action should be taken with respect to untimely submissions by a third party? ---------------------------------------- COMMENT ON QUESTION 14: ------- 010-Q14.TXT It is clearly desirable to allow third parties to submit prior art or "protest" the application. If the issue fee has been paid or patent granted, before the 18-month publication date, clearly no right to protest exists. If prosecution in the case is still open or only the notice of allowance has been sent, a third party should be allowed to submit prior art and have prosecution re-opened. Third parties should have 45 or 60 days after the publication date of the application to submit prior art. Art submitted after this deadline should simply be placed in the file. Further, unlike requests for re-examination where only limited types of prior art can be submitted, all forms of prior art, i.e., evidence of statutory bar public use or sale, printed publications and the like should be reviewed. The third party's activities in the protest should be limited to art submission within the window. Otherwise, no other submissions from the third party should be considered, keeping prosecution ex parte. ---------------------------------------- GENERAL COMMENT: No comments supplied
Last Modified: March 1995